Tire Mart, Inc.

Trademark Trial and Appeal Board

Jan 22, 2008

No. 78292388 (T.T.A.B. Jan. 22, 2008)

January 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tire Mart, Inc.
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Serial No. 78292388
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Laila S. Wolfgram, Stinson Morrison Hecker, LLP for applicant
Tire Mart, Inc.

Christopher L. Boungiorno, Examining Attorney, Law Office 102
(Matthew Kline, Senior Attorney).
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Before Walters, Bucher, and Mermelstein, Administrative Trademark
Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Tire Mart, Inc. has applied to register the mark shown below
on the Principal Register for “tires for motor vehicles” in
International Class 12.1

On January 16, 2006, following publication for opposition,
applicant filed a statement of use pursuant to Trademark Act
THIS OPINION
IS NOT A PRECEDENT
OF
THE TTAB
Serial No. 78292388

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§ 1(d); 15 U.S.C. § 1051(d), alleging dates of use in commerce
and first use of the mark “at least as early as” July 29, 2004.
With its statement of use, “applicant ... submitt[ed] [two]
specimen[s] ... consisting of ... photographs of [a] tire showing
[the] mark in tire tread.”
The examining attorney has made final a refusal to register
the mark on the basis that the mark as used in the specimens of
record is merely ornamental, and does not function as an
indication of source. Trademark Act §§ 1, 2, and 45; 15 U.S.C.
§§ 1051, 1052, and 1127. As the examining attorney noted, “the
specimens show the proposed mark appearing on the topside of
tires in an ornamental fashion[ and] trademarks for tires do not
customarily appear so that they are perceived as being
incorporated in the tread of the tire.” Final Office Action,
September 18, 2006.
The specimens submitted by applicant are reproduced below.
As can be readily seen, applicant’s lightning bolt design is
molded into the goods beginning on the outside shoulder of the
tire, and extending onto the sidewall. The design is molded in
groups of three lightning bolt designs decreasing in size closer
to the bead, and arranged radially around the tire. While the
record does not include the depiction of an entire tire, it is

1 Filing date August 26, 2003, based on a bona fide intent to use the
mark in commerce.

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estimated that the groups of three lightning bolts are repeated
fifteen to twenty times around the tire.

Applicant filed a timely appeal from the final refusal to
register. Both applicant and the examining attorney have filed
briefs. We reverse.
At the outset, we wish to make clear that this case is not
about whether the mark, as molded into applicant’s goods, is
functional, as now codified in Trademark Act § 2(e)(5); 15 U.S.C.
§ 1152(e)(5). The stated refusal, evidence, and arguments have
all been directed to the examining attorney’s refusal on the
ground that the
specimens reveal that the mark appears on the
topside of tires in an ornamental fashion.
Because trademarks for tires do not customarily
appear so that they are perceived as being
incorporated in the tread of the tire, the
examining attorney refuses registration on the
Principal Register because of ornamental use of
the mark. Trademark Act Sections 1, 2 and 45,
15 U.S.C. §§ 1051, 1052 and 1127.

Office Action, March 21, 2006.
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Accordingly, we express no opinion as to whether applicant’s
mark, as molded into the goods, serves any functional purpose,
and if so, whether that function renders the mark unregistrable
under Trademark Act § 2(e)(5). Compare Goodyear Tire and Rubber
Co. v. Interco Tire Corp. (US Pats), 49 USPQ2d 1705 (TTAB 1998)
(tire tread design held unregistrable as functional).
Applicable Law
The purpose of a trademark is to identify the source of the
associated goods in commerce and distinguish them from the goods
of others; any “mark” which cannot or does not do this is simply
not a trademark. A designation which serves only as
ornamentation or decoration on the goods is thus not registrable
on the Principal Register. Trademark Act §§ 1 (“The owner of a
trademark used in commerce…”), 2 (“No trademark by which the
goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on
account of its nature unless…”), 45 (“The term ‘trademark’
includes any word, name, symbol, or device ... used ... or
[intended to be used] to identify and distinguish [the owner’s]
goods … from those manufactured or sold by others and to indicate
the source of the goods.”) (emphasis added); see, e.g., In re
Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987).
Nonetheless, just because a “mark” is visually pleasing or
serves in some way to ornament the goods does not render it
unregistrable if the mark is also inherently distinctive, In re:
Serial No. 78292388

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Swift & Co., 223 F.2d 950, 106 USPQ 286, 288 (CCPA 1955), or if
it has acquired distinctiveness.2
[W]hile not every sign used on a product, or on
its label, package, etc., functions as an
indication of source of the product on which it is
used – e.g. some are merely part of the aesthetic
ornamentation – the broad and liberal
interpretation of our law is that, where such a
sign also serves a source indicating function, it
should be regarded as acceptable subject matter
for registration. (citations omitted)

In re Paramount Pictures Corp., 213 USPQ 1111, 1113 (TTAB 1982).
In deciding this case, we must therefore determine whether
applicant’s mark is inherently distinctive; in other words,
whether – as used on the specimens of record – the mark is an
indication of source, notwithstanding any aesthetic qualities it
may have.
Discussion
In response to the initial refusal (which included no
supporting evidence) applicant submitted four examples of its use
of the mark on other goods:
1. What appears to be a website banner on which the words
“Pit Bull Tires” appears prominently. The letter “P” in
“Pit Bull” ends in a zigzag design similar to the
applied-for mark;3

2. What may be the “temporary tattoo” mentioned in
applicant’s response. The stylized words “Pitbull Tires”

2 Although invited by the examining attorney to demonstrate acquired
distinctiveness (if possible), applicant’s arguments throughout
examination and on appeal focus instead on the inherent
distinctiveness of its mark. Accordingly, acquired distinctiveness is
not an issue.
3 The banner also depicts a shirt and cap in the background of the
right hand side. We cannot see whether the lightning bolt is depicted
on the clothing.
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are bordered on each end by a horizontal, double
lightning bolt design;

3. A photograph of a tire and wheel, with a decorative wheel
rim featuring the words “Pit Bull” bordered at each end
by a horizontal single lightning bolt design; and

4. A photograph of a “Beware of the Dog” sign. If the
lightning bolt design is part of the sign, it is not
legible on the evidence of record.

In support of the refusal to register, the examining
attorney attached to the final office action a number of web
pages depicting nine tires with various tread designs.
The examining attorney bears the burden of making a prima
facie showing that the mark is merely ornamental, and does not
function as a trademark. While the conclusion is somewhat
subjective, Swift & Co., 106 USPQ at 288,4 we find that the
evidence and argument of record do not support the refusal in
this case.
The examining attorney proffered the pictures of other tires
with various tread designs to show that “tire tread consists of
many designs that resemble recognized objects. The specimens
show the proposed mark appearing several times in a pattern on

4 Since the line distinguishing between mere
ornamentation and ornamentation which is merely an
incidental quality of a trademark is not always clearly
ascertainable, the application of legal principles to
fit one situation or the other requires proper
reflection upon the impression likely to govern the
ordinary purchaser in the market place. For that
reason, the merits of each case of the character here
presented must be individually and accordingly
adjudged.
Swift & Co., 106 USPQ at 288.

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the goods. This use of the proposed mark does not convey a
source indicator.” Office Action (Final), at 2 (Sept. 18, 2006).
There are two problems with this argument.
First, we can see no “designs resembl[ing] recognized
objects,” on the tire treads depicted, and the examining attorney
has not specifically identified any.
Second, although the examining attorney refers to
applicant’s mark as “tread” and compares it to various tire tread
designs, applicant responds that this “is inaccurate as Applicant
has noted several times that its mark is not incorporated into
the tire tread pattern at all.”5 Reply Br. at 2. Indeed, it
does not appear clear that the embossed mark is “tread” in the
sense of tire lugs. The specimens of record clearly show the
raised area containing three imprinted molds of the alleged mark
have a considerably lower profile than the adjacent tread.
Accordingly, it is unlikely that the raised area containing the
lightning bolt designs would contact the road surface under
normal use. Moreover, the mark does not appear “where the rubber
meets the road,” but rather wraps laterally around the edge of
the outside shoulder and onto the exterior face of the tire.
Because applicant’s mark does not appear to be tire tread, nor

5 In its Statement of Use, under “Specimen Description,” applicant
inserted “photographs of tire showing mark in tire tread.” However,
this statement must be viewed in the context of the specimens
themselves, as well as applicant’s later qualification of the mark as
“not being incorporated in the tire tread.” We note that a
description of the specimens is not a required feature of a Statement
of Use. See Trademark Rule 2.88(b).
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does it even appear on the part of the tire usually covered by
tread, the examining attorney’s argument that applicant’s
purchasers would simply view the mark as an ornamental tread
design is substantially undercut.
We agree with the examining attorney that applicant’s
evidence of use of the mark on collateral goods is entitled to
little weight. As we understand it, applicant presented this
evidence to show that its use of the mark on other goods, in a
more traditional trademark manner, has created an association
between the lightning bolt design and applicant. Thus
associated, the relevant purchasers would view the lightning bolt
as it appears on applicant’s tires – not as an ornamental design
- but as applicant’s trademark. This is essentially an argument
that the mark has acquired distinctiveness, which is not the
issue before us. Further, of the four pieces of evidence
proffered, a lightning bolt is visible on only three of them, two
of which differ substantially from the mark which applicant seeks
to register. The closest evidence is the picture of applicant’s
decorative wheel cover, in which the lightning bolt is
horizontal, not vertical. There is no evidence of how many of
these decorative wheel covers have been distributed (e.g., sales
or advertising figures) or whether the association urged by
applicant has actually occurred (e.g. surveys, affidavits,
evidence of recognition in publications). In short, we simply do
not view applicant’s evidence as indicative of whether consumers
Serial No. 78292388

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would consider the lightning bolt as used on applicant’s tires as
an indication of source.
Applicant also argues that no other tire manufacturer places
its trademark on its product in the manner applicant has done
here, and that applicant’s design will therefore be distinctive
as a mark. While uniqueness alone does not necessarily indicate
that the design is a source indicator, neither has it been shown
that applicant’s design is the same as or highly similar to
common and pervasive ornamentation used in the industry.
In In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ
415 (CCPA 1969), the proposed mark comprised “three narrow white
concentric rings of approximately equal width applied to the
outer surface of a dark sidewall tire.” 160 USPQ 416. In
analyzing the case, the Court pointed out that
white stripes are so common on the sidewalls of
tires as to have created in the minds of
purchasers a type of tires known as whitewalls.
This situation does not exist as to white stripes
placed on containers or other articles. [Quoting
appellees brief].

This, it seems to us, reaches the heart of
the matter. The general public, it is well known,
has long been familiar with whitewalls as a dress
or ornamentation for tires. It therefore seems to
us that a typical purchaser, having the idea that
whitewall indicia is primarily for ornamentation,
would be more likely to consider a 3-ring
whitewall as just a refinement of this general
ornamental concept, rather than as a trademark.
This it seems distinguishes the present situation
from Swift[6] because, although Swift's two spaced

6 Swift and Co., supra, involved an application for registration of a
mark comprising two polka dot bands surrounding a cylindrical can of
cleanser. The CCPA reversed the refusal to register, finding that the
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polka dot bands might be considered a special
species of polka dot banding, there was no general
understanding of the public in Swift that polka
dot banding, even in a single band, was a commonly
adopted and well known form of ornamentation for
cylindrical containers for household commodities.

160 USPQ 417 (affirming refusal of registration).
Here, the examining attorney has presented no evidence that
applicant’s designation and its placement on the goods – or
designs similarly placed – are widely-viewed as mere
ornamentation in the tire industry in the way that the variation
on whitewalls was viewed in General Tire and Rubber. While some
of the tires pictured in the examining attorney’s evidence appear
to have designs extending onto the sidewall, some do not. (Of
the tires that do appear to have such designs, it cannot be
clearly seen from the record evidence what those designs are.)
There is no evidence (such as articles or advertisements) that
consumers actually perceive sidewall designs as merely
ornamental, or any evidence that the lightning bolt itself is
merely decorative.
Conclusion
It remains the examining attorney’s burden to come forward
with evidence and argument to support a prima facie case for
refusal of registration. On this record, we find that this
burden has not been sustained.

mark, while “incidentally” ornamental, was nonetheless an indication
of source. 106 USPQ at 289.
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Decision: The refusal under Trademark Act §§ 1, 2, and 45
is REVERSED.